OPPOSITION No B 3 048 173

Marco und Massimo Mosna GbR, Belgische Allee 22, 53842, Troisdorf, Germany (opponent), represented by Geskes Patent- und Rechtsanwälte, Gustav-Heinemann-Ufer 74b, 50968, Köln, Germany (professional representative)

a g a i n s t

Embutidos Iberope, S.L., C/. Ronda Sequia de Meses - P.I. Les Meses 7-A, 46800, Xativa – Valencia, Spain (applicant), represented by J. Lopez Patentes y Marcas, S.L., C/. San Vicente, nº 83-3º-17, 46007, Valencia, Spain (professional representative).

On 20/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 173 is upheld for all the contested goods and services, namely

Class 29: Processed foodstuffs based on vegetables; vegetal preparations for use as cheese substitutes; dairy substitutes and/or dairy replacement preparations.

Class 35: Wholesaling and retailing in shops and via global computer networks of processed foodstuffs based on vegetables, vegetal preparations for use as cheese substitutes, dairy substitutes and/or dairy replacement preparations.

2. European Union trade mark application No 17 545 906 is rejected for all the contested goods and services. It may proceed for the remaining services.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 545 906 for the figurative mark , namely against all the goods in Class 29 and some of the services in Class 35. The opposition is based on German trade mark registration No 302 015 005 749 for the word mark ‘Veganese’. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods and services

The goods on which the opposition is based are, inter alia, the following:

Class 29: Casserole [savoury meals]; vegetable spreads; stews; fermented soya beans [natto]; instant meal, primarily made of a nutritious soybean paste and bean curd [Cheonggukjang jjigae]; instant meal, primarily made of a soybean paste and bean curd [Doenjang jjigae]; meat substitute; vegetables [boiled]; vegetables [processed]; peeled vegetables; dried soybeans; deep-frozen instant meal, mainly consisting of vegetables; soy-based take-away meals; chickpeas paste [hummus]; coconut oil; coconut oil and fat [for food purposes]; preserved soybeans; preserved vegetables; cheese substitute; artificial cream [milk substitute].

The contested goods are the following:

Class 29: Processed foodstuffs based on vegetables; vegetal preparations for use as cheese substitutes; dairy substitutes and/or dairy replacement preparations.

Class 35: Wholesaling and retailing in shops and via global computer networks of processed foodstuffs based on vegetables, vegetal preparations for use as cheese substitutes, dairy substitutes and/or dairy replacement preparations.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 29

The contested processed foodstuffs based on vegetables overlap with the opponent’s vegetables [processed]. Therefore, they are identical.

The contested vegetal preparations for use as cheese substitutes are included in the opponent’s cheese substitute. Therefore, they are identical.

The contested dairy substitutes and/or dairy replacement preparations include, as a broader category, the opponent’s artificial cream [milk substitute]. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to these particular goods (05/05/2015, T-715/13, Castello (fig.) / Castelló y Juan S.A. (fig.) et al., EU:T:2015:256, § 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

The goods covered by the retail services and the specific goods covered by the other mark have to be identical in order to find similarity, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category.

The principles set out above apply to the various services rendered that revolve exclusively around the actual sale of goods, such as retail store services, wholesale services, internet shopping, catalogue or mail order services, etc.

Therefore, the contested wholesaling and retailing in shops and via global computer networks of processed foodstuffs based on vegetables, vegetal preparations for use as cheese substitutes, dairy substitutes and/or dairy replacement preparations are similar to a low degree to the opponent’s vegetables [processed]; cheese substitute; artificial cream [milk substitute] in Class 29.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar to a low degree are directed at the public at large and, at business customers with specific professional knowledge or expertise.

The wholesale services in Class 35 of the contested mark are mainly addressed to a professional public, namely dealers and traders (see, by analogy, 21/03/2013, T-353/11, eventer Event Management Systems, EU:T:2013:147, § 37; 15/02/2016, R363/2015-5, OTTOGREEN / OTTO (fig.), § 13), who pay an enhanced level of attention since business interests are concerned. For the remaining goods and services the degree of attention is average.

Therefore the degree of attention may vary from average to high.

c) The signs

Veganese
Earlier trade mark	Contested sign

The relevant territory is Germany.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The signs as a whole have no meaning for the relevant public. However, although composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). It follows from the foregoing that the element ‘Vegan’ common to both marks will be singled out and understood as ‘not containing animal products’. Therefore it is considered non-distinctive for the goods in question, vegetable preparations and dairy substitutes, and the respective retailing and wholesaling services, as it indicates the nature of the goods.

The final parts of the signs, ‘ese’ for the earlier mark and ‘eso’ for the contested sign, are fanciful endings which do not convey any meanings hence they are the distinctive parts of the signs.

For the sake of completeness, the signs under comparison have no element that can be considered more dominant (visually eye-catching) than other elements.

Furthermore, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs have the same number of letters and the same structure as they coincide in the sequence of letters ‘Veganes*’. They only differ in the last letter of the signs, ‘e’ versus ‘o’, and the slightly stylised typeface of the contested mark.

Despite the non-distinctive character of the word ‘vegan’ for the goods and services in question, the signs are visually highly similar given that the coincidence is not limited to ‘Vegan’ but encompasses almost the whole verbal elements also bearing in mind that the final letters ‘e’ and ‘o’ have similar shapes.

Aurally, the pronunciation of the signs coincide in the sound of the letters ‘Veganes*’ and differ in the sound of the last letter of the signs, ‘e’ in the earlier mark and ‘o’ in the contested sign. Bearing in mind the foregoing, in particular that the difference is placed in the very final sound and does not introduce a difference in the number of syllables, rhythm or intonation of the signs, it is considered that the signs are aurally similar to a high degree despite the non-distinctive character of the word ‘vegan’ for the goods and services in question.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and to the weight attributed to the common and meaningful element ‘Vegan’. As this element has a very low ability to function as a badge of origin, the overall degree of conceptual similarity is low.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Furthermore, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

It has been established that the contested goods and services are identical or similar to a low degree to the opponent’s goods. They are directed at public at large and at business customers and the degree of attention will vary from average to high. The earlier mark has an average degree of distinctiveness.

It has also been concluded that the signs are visually and aurally similar to a high degree and conceptually similar to a low degree, on account on the common element ‘Veganes*’. The marks share seven letters while they consist of eight letters. It is true that the word ‘Vegan’ is non-distinctive in relation to the relevant goods and services, nevertheless account must be taken that the similarities also arise from the sequence of letters ‘es’ placed immediately after ‘Vegan’. The only differences between signs are confined to the last letter and the slight stylisation of the contested sign, which however has a limited impact in the overall perception of the sign.

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the degree of similarity between them and the relevant public, even paying a higher than average degree of attention, may be led to believe that the goods and services originate from the same undertaking or economically-linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public.

This finding is true also for the contested services that are similar to only a low degree to the goods of the opponent. The significant visual and aural similarities between the signs outweigh the low degree of similarity between those goods and services.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 015 005 749 for the word mark ‘Veganese’. It follows that the contested trade mark must be rejected for all the contested goods and services.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Catherine MEDINA

Jorge ZARAGOZA GOMEZ

Begoña URIARTE VALIENTE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.